How does the USPTO handle “election by original presentation”?
The USPTO handles “election by original presentation” when an applicant adds claims to a new invention after receiving an Office action on the original claims. The examiner will treat the newly added claims as if they were part of a separate application. Specifically:
- The examiner will issue a restriction requirement using form paragraph 8.04.
- The new claims will be withdrawn from consideration as being directed to a non-elected invention.
- The applicant will be informed that they have “constructively elected” the original invention for prosecution on the merits.
The MPEP 821.03 states:
“Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits.”
This process ensures that the examination remains focused on the originally presented invention while allowing the applicant to pursue the new invention in a separate application if desired.
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